SEARCH ALPHABETICALLY

FILTER BY

Featured Industries

From artificial intelligence (AI) and machine learning to autonomous vehicles, virtual reality, and cryptocurrency, the rapid evolution of technology shows no sign of slowing down. Companies in the digital technology sector are among the world’s most highly valued companies, with good reason. And businesses in every sector now use digital technology in all kinds of ways, from basic email to sophisticated data analytics.

Featured Industries

Fresh water is becoming a scarce resource in the United States and across the globe as demand continues to rise due to population and business growth. This emergent scarcity means businesses will face more consequences of the complex regulatory and legal frameworks governing water use and water quality.

Michael Best’s Water team understands those issues. We guide clients through the heavily regulated, politically sensitive environment surrounding the management of, investment in, and development of water resources.

Featured Practice

To prevail in litigation, clients need exceptional representation both inside and outside the courtroom. With more than 40 lawyers and other professionals, our seasoned Litigation practice group provides battle-tested service and representation for nearly any type of dispute.

Publication

March 9, 2011Client Alert

America Invents Act Passed by the United States Senate

National Law Review

The Senate passed the America Invents Act[1], previously known as the Patent Reform Act of 2011, on March 8, 2011. The Act passed by a 95 to 5 vote in the Senate, and President Obama issued a statement in support of the Act. The legislation is now sent to the U.S. House of Representatives. Some provisions of the Act have changed since we first reported the Patent Reform Act of 2011 in a prior client alert, while other provisions remained essentially unchanged. Some key changes to the Act and provisions of the Act, as passed by the Senate, are outlined below.

First to File

The Act passed by the Senate retains the provisions that move the U.S. from a first-to-invent system to a first-to-file system. Any third-party prior art available before the patent application filing date could be used to reject the application. An applicant would still be given a one year grace period for any disclosures made by the applicant or by another party if the other party obtained the subject matter that was disclosed from the applicant. The Act creates a derivation proceeding to replace current interference proceedings where a first applicant claims that a second applicant derived the invention from the first applicant’s work.

Damages

The bill originally passed by the Senate Judiciary Committee included procedures for the calculation of damages during litigation and for the determination of infringement and validity issues before the issues of damages and willful infringement. Both of these provisions were removed from the Act passed by the full Senate.

Micro Entity Fee Reductions

The Act allows the Patent Office to define a micro entity that would be eligible for a 75 percent reduction in fees, and retains the current small entity fees that are generally reduced by 50 percent.

Patent Office Fee Setting Authority

Under the Act, the Patent Office can set patent and trademark application and maintenance fees without approval by Congress. Also, the Act ends the diversion of fees collected by the Patent Office.

Best Mode Requirement

An alleged infringer could no longer have a patent invalidated for an applicant’s failure to disclose the best mode for carrying out the invention.

False Marking

The Act passed by the Senate retained the original provisions that would no longer allow any person to bring a false marking lawsuit under 35 U.S.C. Section 292. Rather, false marking lawsuits would be limited to those filed by the United States or by a competitor who can prove a competitive injury.

Third Party Challenges

Similar to the version of the bill passed by the Senate Judiciary Committee, third parties would be allowed to submit printed publications after an application publishes, along with an explanation regarding the relevance of the printed publication. Also, third parties would be able to request a post-grant review to challenge validity within nine months of the patent grant, bringing the U.S. in line with European opposition practice. Validity during the post grant review could be challenged on any ground, in contrast to current reexamination rules, which only allow challenges based on patents or printed publications. After the nine month window for post grant review, third parties could use a reexamination proceeding, but could only challenge validity based prior art patents or printed publications.

Supplemental Examination

The bill passed by the full Senate retains a Supplemental Examination procedure that was included in the version passed by the Senate Judiciary Committee. A patent owner could request a supplemental examination (e.g., before litigation) so that the Patent Office considers information that was not considered during an earlier examination. Unlike the current reexamination procedures, the information that can be considered in a supplemental examination would not be limited to patents or printed publications. If the Patent Office determines that the submitted information raises a substantial new question of patentability, a reexamination of the patent will be ordered. By making the supplemental examination request, even if a reexamination is not ordered, the patent cannot be held unenforceable on the basis of the information in the supplemental examination request.

We will continue to monitor the status of this legislation and provide updates.

A full copy of the American Invents Act passed by the Senate is available via the following link.

Related People

Clients look to Kevin for strategic counsel on the protection of their intellectual property, including acquisition of, enforcement of, and defense against United States and international patents. His strong track record in these areas, paired with a technical background as a product engineer, give Kevin a unique perspective on the challenges facing developers of mechanical, electro-mechanical, and biomedical technologies.

Al works with manufacturers that are developing products such as vacuum cleaners, power tools, heat exchangers, and air purifiers. These clients rely on Al for his quick work and novel approach in managing cost-effective patent portfolios and prosecuting patent applications, both internationally and at the U.S. Patent and Trademark Office (USPTO).

Related Practice

Any information you convey to Michael Best & Friedrich LLP via the internet may not be secure, and any information conveyed prior to establishing an attorney-client relationship may not be privileged or confidential. The establishment of an attorney-client relationship requires prior satisfaction of multiple factors, including resolution of conflicts and mutual agreement on the terms of the engagement. Before speaking with a Michael Best attorney, please do not convey any more information than is reasonably necessary to describe generally the matter, and to identify the adverse parties. Please do not convey any information you deem as confidential. Please click the “Accept” button below to confirm that you understand and accept the foregoing statement and wish to proceed in sending a message.